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April 20, 2018Newsletter

This Week at the Board - April 20, 2018

Board Denies Patent Owner Request To Vacate Final Written Decision In View Of Settlement By The Parties

In IPR2015-01756, the Board had previously entered a final written decision, entering adverse judgment against the patent owner with respect to claims 11, 14, and 15, and finding that the petitioner had shown by a preponderance of the evidence that claims 13 and 16 were unpatentable.  The patent owner appealed the final written decision to the Federal Circuit.  Prior to receiving a decision, the patent owner and petitioner then settled their dispute.  The patent owner filed, and the Federal Circuit granted, an unopposed motion requesting that the Federal Circuit dismiss the appeal and remand the case back to the Board to allow the patent owner to file a motion to vacate the final written decision.  The Federal Circuit granted the request, but took no position regarding whether the Board should grant the motion to vacate.  The patent owner then proceeded with the motion to vacate.  The Board, however, denied the motion.  While the Board agreed with the patent owner that sound public policy favors settlement of inter partes reviews, the Board noted that this was not the actual issue before the Board.  Rather, the issue was whether public policy favors vacating a final written decision that was entered before the parties settled their dispute.  The Board noted that Congress had expressed its opinion that inter partes reviews encompass more than a simple dispute between two parties.  Rather, inter partes reviews are directed to removing the negative effects that unpatentable claims may have on the economy or the integrity of the patent system as a whole.  Thus, although statutes and regulations encourage settlement, the Board found that it would be against public policy to vacate a final written decision simply because the parties have settled.      

A link to the decision is found here.

District Court Holds That Swapping The Order Of References Does Not Alter Scope Of IPR Estoppel

In Nox Medical EHF v. Natus Neurology, Inc., Nox filed a motion in limine seeking, in part, to block Natus from raising an obviousness theory combining “B in view of A” due to IPR estoppel.  In the related IPR, Natus raised obviousness over “A in view of B,” but the PTAB did not institute on these grounds. The District Court found that for the “combinations 'A in view of B' on which the PTAB did not institute, I would regard that as reasonably raising 'B in view of A' also, and thus I reject Plaintiff's assertions to the contrary.”  The District Court ruled that combinations the PTAB did not institute may be pursued at trial.  Because the Court regarded raising B in view of A as raising A in view of B, any argument that B in view of A was estopped for not being raised in the IPR was presumably rendered moot.  

A link to the decision is found here.

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